To: | Flexera Software LLC (TMDocketing@wcsr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87088570 - FLEXERA - F87569 3081 |
Sent: | 10/14/2016 9:43:55 AM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87088570
MARK: FLEXERA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Flexera Software LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 10/14/2016
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES that applicant must address:
REQUIREMENT – AMEND IDENTIFICATION OF GOODS AND SERVICES
Applicant may adopt the following identification, if accurate:
Class 9: Computer software which enforces and monitors compliance by managing the entitlement and fulfillment of electronic licenses for software, firmware, data, and related updates; computer software which electronically delivers software, firmware, data, and related updates; computer software which monitors, reports, and optimizes license usage; computer software which packages and repackages the installation of software, firmware, data, and related updates; computer software for monitoring and maintenance of the security and integrity of computer systems, local area networks, intranets, global computer networks and the internet; computer software for delivering, alerting, reporting, and managing the workflow of software security advisories; computer software which determines the compatibility between software and firmware and other software and firmware; computer software which determines the optimal runtime environment for software and firmware; computer software which discovers, assesses, and consolidates software and firmware to facilitate the migration of that software and firmware to a different runtime environment; computer software which enforces continual software license compliance by controlling software deployment
Class 42: Software as a service (SaaS) services, namely, hosting software for use by others for managing the entitlement and fulfillment of electronic licenses for software, firmware, data, and related updates, for the purpose of monitoring compliance; software as a service (SaaS) services, namely, hosting software for use by others for electronically delivering software, firmware, data, and related updates; software as a service (SaaS) services, namely, hosting software for use by others for monitoring and maintenance of the security and integrity of computer systems, local area networks, intranets, global computer networks and the internet; software as a service (SaaS) services, namely, hosting software for use by others for delivering, alerting, reporting, and managing the workflow of software security advisories; software as a service (SaaS) services, namely, hosting software for use by others for discovering, assessing, and consolidating software and firmware to facilitate the migration of that software and firmware to different runtime environments; software as a service (SaaS) services, namely, hosting software for use by others for monitoring, reporting, and optimizing license usage
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
REQUIREMENT – AMEND MARK DESCRIPTION
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the stylized wording "FLEXERA" where the letter "X" arcs and extends over the letters "ERA."
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
Assistance
/Blazich, Joan/
Joan Blazich
Examining Attorney
Law Office 122
(571) 272-7810
joan.blazich@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.